The Complainant is Bang! Media Group B.V., Netherlands, represented by Penrose, Netherlands.
The Respondent is Eusof Ali, HMEA World, Bangladesh.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2021. On November 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 17, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2022. The Center received email communications from the Respondent on November 19, December 4, and 21, 2021, and January 11, 2022.
On November 26, 2021, the Center suspended the proceedings on the Complainant’s request. On December 27, 2021, the proceeding was reinstituted by the Center on the Complainant’s request. The new Response due date was January 9, 2022.
The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on January 25, 2022. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual BackgroundThe Complainant, Bang! Media Group B.V., also acting under the name “Advidi”, is a private company with limited liability, founded in the Netherlands in 2012, which operates an international performance marketing / CPA network through connecting affiliates and advertisers. The Complainant offers its products and services via its website connected to the domain name
The Complainant is the owner of several trademark registrations for ADVIDI, in various jurisdictions, including European Trademark Registration No. 1.343.190 ADVIDI, registered on December 6, 2016, for services in classes 35 and 42.
The disputed domain name
The Complainant claims that the disputed domain name is confusingly similar with the trademark ADVIDI in which the Complainant has rights and that the Respondent has no rights or legitimate interests in the disputed domain name, which was registered and is being used in bad faith.
More specifically, the Complainant claims that the website that at one time was linked to the disputed domain name also offered advertising and affiliate marketing services, under the sign ADSVIDI (Annex 3).
The Respondent has not received permission from the Complainant to offer (and sell) identical or similar services under a sign identical or similar to the trademark ADVIDI.
The Complainant believes that the disputed domain name has been registered for the sole reason of commercial gain by means of misleadingly diverting consumers seeking the Complainant to the Respondent’s website.
Finally, the Complainant requests the Panel to issue a decision ordering that the disputed domain name be transferred to the Complainant.
B. RespondentThe Respondent did not file a formal response to the Complainant’s contentions and in its email communication to the Center of January 11, 2022, it indicated “I already said, I am ready to transfer the domain anytime”. However, the Parties failed to reach a settlement and, as indicated above, on December 27, 2021, the proceeding was reinstituted by the Center on the Complainant’s request.
6. Discussion and FindingsAccording to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:
(i) the disputed domain name is identical or confusingly similar with a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
As set forth in section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the disputed domain name is confusingly similar with the trademark. The test involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
The Panel considers that the disputed domain name is confusingly similar with the Complainant’s ADVIDI trademark.
The disputed domain name
The “.com” generic Top-Level Domain (“gTLD”) is viewed as a standard registration requirement and is generally disregarded under the first element confusing similarity test, as set forth in section 1.11 of WIPO Overview 3.0.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the trademark ADVIDI in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy are fulfilled.
B. Rights or Legitimate InterestsPursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a domain name, it is well established, as it is put in section 2.1 of WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
The disputed domain name currently resolves to an inactive web page. However, the Complainant has proven that at one time it resolved to a web page which offered services similar to those offered by the Complainant on its own web page. Neither of such situations constitute evidence of demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services and, therefore, cannot establish rights or legitimate interests pursuant to paragraph 4(c)(i) of the Policy.
There is no evidence in the present case that the Respondent has been commonly known by the disputed domain name, enabling it to establish rights or legitimate interests therein. The name of the Respondent does not resemble the disputed domain name in any manner.
Furthermore, there is no evidence in the file to prove any of the circumstances mentioned in paragraph 4(c) of the Policy, nor any other element to prove that the Respondent has legitimate interests or that it has established rights in the disputed domain name.
Likewise, and as further discussed under section 6.C of this decision, it does not seem that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name, which is confusingly similar with the Complainant’s trademark ADVIDI, but rather that it intends to use the disputed domain name for the purpose of deriving unfair monitory advantage by confusing Internet users and leading them to believe that the site to which the disputed domain name resolves is a site associated with the Complainant.
As established in section 2.5 of WIPO Overview 3.0: “Fundamentally, a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant’s mark is often central to this inquiry”.
As indicated in section 6.A above, the disputed domain name is confusingly similar with the Complainant’s trademark ADVIDI and the Respondent is not using the disputed domain name in any way that may be considered fair use.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the disputed domain name (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000‑0003).
The fact that the Respondent has indicated to the Center that it is “ready to transfer the domain any time” would seem to confirm that it has no rights nor legitimate interests in the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been fulfilled.
C. Registered and Used in Bad FaithThe Panel is satisfied that the Respondent must have been aware of the Complainant’s trademark ADVIDI mentioned in section 4 above (Factual Background) when it registered the disputed domain name on August 10, 2021.
The Respondent when registering the disputed domain name has targeted the Complainant’s trademark ADVIDI by adding the letter “s” with the intention to confuse Internet users and capitalize on the fame of the Complainant’s name and trademark for its own monetary benefit.
The fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the disputed domain name is also a significant factor to consider that the disputed domain name was registered in bad faith (as stated in section 3.2.1 of WIPO Overview 3.0).
Panelists have found that non-use of a domain name does not prevent a finding of bad faith under the doctrine of “passive holding” when circumstances exist such as the distinctiveness or reputation of the complainant’s mark, the failure of the respondent to submit a formal response or to provide any evidence of actual or contemplated good faith use, and the implausibility of any good faith use to which the disputed domain name may be put. The Panel finds that all these circumstances are relevant to this administrative proceeding and therefore that a finding of bad faith lies under the doctrine of “passive holding” (section 3.3 of WIPO Overview 3.0).
The Panel finds that the Respondent has registered and uses the disputed domain intentionally to attempt to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement. This amounts to bad faith under paragraph 4(b)(iv) of the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name,
Miguel B. O'Farrell
Sole Panelist
Date: February 8, 2022